647.115 Effect
of chapter on marks or trade names acquired at common law; effect of civil
remedies on criminal statutes; intent and construction of chapter

647.135 Trademark
counterfeiting

647.140 Trademark
counterfeiting in third degree; penalty

647.145 Trademark
counterfeiting in second degree; penalty

647.150 Trademark
counterfeiting in first degree; penalty

647.155 Seizure,
forfeiture and disposal

ROYALTIES
FOR NONDRAMATIC MUSICAL WORKS

647.700 Definitions
for ORS 647.700 to 647.730

647.705 Requirements
for performing rights societies

647.710 Requirements
for contracts for payment of royalties

647.715 Prohibited
conduct

647.720 Action
for damages; injunction

647.725 Relationship
to other laws

647.730 Applicability
of ORS 647.700 to 647.730

TRADEMARKS
AND SERVICE MARKS

(Generally)

647.005
Definitions.
As used in this chapter:

(1)
“Applicant” means a person that files an application to register a mark under
this chapter, and the person’s legal representatives, successors or assigns.

(2)
“Dilution” means an association that arises from the similarity between a mark
or trade name and a famous mark, regardless of the presence or absence of
competition between the owner of the famous mark and another party, actual or
likely confusion, mistake, deception or actual economic injury, if the
association:

(a)
Impairs the distinctiveness of the famous mark, an association commonly known
as dilution by blurring; or

(b)
Harms the reputation of the famous mark, an association commonly known as
dilution by tarnishment.

(3)
“Mark” means a trademark or service mark entitled to registration under this
chapter whether registered or not.

(4)
“Person” means an individual, firm, partnership, corporation, association, limited
liability company, union or other organization capable of suing or being sued
in a court.

(5)
“Registrant” means a person to whom the registration of a mark is issued under
this chapter, and the person’s legal representatives, successors or assigns.

(6)
“Retail value” means:

(a)
For items that bear a counterfeit mark and are components of a finished
product, the regular selling price of the finished product in which the
component would be utilized.

(b)
For items that bear a counterfeit mark other than items described in paragraph
(a) of this subsection and for services that are identified by a counterfeit
mark, the regular selling price of the item or service.

(7)
“Service mark” means a word, name, symbol or device or a combination of words,
names, symbols or devices that a person uses to identify and distinguish the
person’s services, including a unique service, from another person’s services
and to indicate the source of the services, even if the source is unknown.

(8)
“Trademark” means a word, name, symbol or device or a combination of words,
names, symbols or devices that a person uses to identify and distinguish the
person’s goods, including a unique product, from another person’s goods and to
indicate the source of the goods, even if the source is unknown.

(9)
“Trade name” means a name that a person uses to identify the person’s business
or vocation.

(10)(a)
“Use” means a bona fide use of a mark as described in ORS 647.017 in the
ordinary course of trade.

(b)
“Use” does not include a use of a mark made merely to reserve a right in a
mark. [1961 c.497 §1; 1965 c.511 §1; 1981 c.633 §71; 1989 c.931 §1; 1999 c.722 §7;
2009 c.459 §1]

(Registration)

647.009
Filing, service, copying and certification fees. The Secretary
of State shall collect the fees described in ORS 56.140 for each document
delivered for filing under this chapter and for process served on the Secretary
of State under this chapter. The Secretary of State may collect the fees
described in ORS 56.140 for copying a public record under this chapter,
certifying the copy or certifying other facts of record under this chapter. [1991
c.132 §23; 1999 c.652 §17; 2009 c.459 §4]

647.010 [Repealed by
1961 c.497 §16]

647.015
Application for registration. (1) Subject to the limitations set
forth in this chapter, a person who uses a mark may file an application to
register the mark with the Secretary of State in a manner that complies with
the Secretary of State’s requirements. The application must set forth at least
the following information:

(a)
The name and business address of the person applying for registration. If the
person is a corporation, the application must list the state of incorporation.
If the person is a partnership, the application must list the state in which
the partnership is organized and the names of the general partners. If the
person is a limited liability company, the application must list the state in
which the limited liability company was formed.

(b)
The goods or services on or in connection with which the mark is used, the mode
or manner in which the mark is used on or in connection with the goods or
services and the class into which the goods or services fall.

(c)
The date when the mark was first used anywhere and the date when the applicant
or a predecessor in interest first used the mark in this state.

(d)
A statement that:

(A)
The applicant owns the mark;

(B)
The mark is in use; and

(C)
To the knowledge of the person that is verifying the application, no other
person has registered the mark with the federal government or in this state or
has the right to use the mark or a mark that so resembles the mark as to be
likely to cause confusion or mistake or to deceive when applied to the goods or
services of the other person.

(2)
As part of the application, the Secretary of State may require the applicant
to:

(a)
State whether the applicant or a predecessor in interest has filed an
application to register the mark or portions or a composite of the mark with
the United States Patent and Trademark Office and, if so, provide:

(A)
The filing date and serial number of each application filed in connection with
the mark;

(B)
The status of the application; and

(C)
The reasons why the mark was finally refused registration or an application did
not otherwise result in a registration, if the mark was refused registration or
the application did not result in a registration.

(b)
Provide a drawing of the mark that complies with the Secretary of State’s
requirements.

(3)
The applicant, a member of the firm applying or an officer of the corporation,
limited liability company or association applying to register the mark shall
sign and verify the application by oath, affirmation or declaration under
penalty of perjury.

647.017
When mark is in use; abandonment of mark. (1) For purposes of this
chapter, a mark is in use:

(a)
On goods that are sold or transported in commerce in this state when the mark
is placed in any manner on:

(A)
Goods, other containers or displays associated with the goods or tags or labels
affixed to the goods; or

(B)
Documents associated with the goods or the sale of the goods, if the nature of
the goods makes placing the mark on the items identified in subparagraph (A) of
this paragraph impractical.

(b)
On services that are rendered in this state when the mark is used or displayed
in selling or advertising the services.

(2)
A mark is abandoned if either of the following occurs:

(a)
Use of the mark has been discontinued with intent not to resume the use. Intent
not to resume use may be inferred from circumstances. Nonuse for two
consecutive years is prima facie evidence of abandonment.

(b)
A course of conduct of the owner, including a failure to act, causes the mark
to lose significance as a mark.

(3)
A title, character name that a person uses and other distinctive features of a
radio or television program may be registered as a service mark notwithstanding
that the title, name or feature or the program may advertise the goods of the
sponsor. [2009 c.459 §3]

647.020 [Repealed by
1961 c.497 §16]

647.024
Rules for classes of goods and services. (1) The Secretary of State by rule may
establish classes of goods and services for convenience in the administration
of this chapter. The classes that the Secretary of State establishes may not
limit or extend an applicant’s or registrant’s rights and shall conform to the
classes the United States Patent and Trademark Office has adopted to the extent
practicable.

(2)
A single application to register a mark may include any or all goods or
services on or in connection with which the mark is actually being used.

(3)
If an application includes more than one class, the Secretary of State may
collect a fee under ORS 56.140 for each class. [1985 c.728 §84b (enacted in
lieu of 647.025); 2009 c.459 §6]

647.029
Examination of application by Secretary of State; amendment of application;
refusal to register mark; priority of concurrent applications. (1) The
Secretary of State, at the Secretary of State’s sole discretion, may examine an
application filed under ORS 647.015 for conformity with the provisions of this
chapter. This section does not require the Secretary of State to conduct an
examination or investigation in connection with an application for
registration.

(2)
An applicant shall provide additional pertinent information the Secretary of
State requests, including a description of a design that is used as a mark. The
applicant or, with the applicant’s authorization, the Secretary of State may
amend the application to conform with the Secretary of State’s requirements or
as the applicant deems advisable to respond to a rejection or objection. The
Secretary of State may require the applicant to submit a new application.

(3)
The Secretary of State may require the applicant to disclaim an unregisterable
component of a mark that is otherwise registerable. The applicant may
voluntarily disclaim a component of a mark that the applicant has applied to
register. An applicant’s disclaimer does not prejudice or affect the applicant’s
or a registrant’s rights that exist or arise in the matter the applicant
disclaimed or the applicant’s or a registrant’s rights of registration on
another application if the matter the applicant disclaimed is or has become
distinctive of the applicant’s or registrant’s goods or services.

(4)
If the Secretary of State finds that an applicant is not entitled to register a
mark, the Secretary of State shall notify the applicant and provide the
Secretary of State’s reasons for the finding. The Secretary of State shall
provide the applicant with a reasonable time in which to reply or amend the
application and shall examine the amended application in accordance with the
provisions of this section. The applicant may continue to amend the application
until:

(a)
The Secretary of State in a final order refuses to register the mark; or

(b)
The applicant abandons the application by failing to reply to the Secretary of
State’s notice or amend the application within the time the Secretary of State
specifies.

(5)
If the Secretary of State in a final order refuses to register a mark, the
applicant may seek a writ of mandamus under ORS 34.105 to 34.240 to compel the
Secretary of State to register the mark. The court may grant the writ if the
applicant proves that the statements in the application are true and that the
mark is otherwise entitled to registration. The court may not assess costs or
award damages against the Secretary of State in an action for a writ of
mandamus brought under this section.

(6)
If the Secretary of State is concurrently processing applications that seek to
register the same mark or a mark that is likely to cause confusion or mistake
or to deceive when used on or in connection with goods or services identified
in the applications, the Secretary of State shall grant priority to the
applications in the order in which they were filed. If the Secretary of State
grants a registration for a mark on the basis of an application filed prior to
other applications, the Secretary of State shall reject the other applications.
A rejected applicant may bring an action to cancel the registration the
Secretary of State granted on the basis that the rejected applicant had prior
or superior rights to the mark. [1985 c.728 §85b; 1987 c.94 §104; 2009 c.459 §7]

647.030 [Repealed by
1961 c.497 §16]

647.035
Marks ineligible for registration. (1) A mark that an applicant submits
for registration may not be registered if the mark consists of or comprises:

(a)
Matter that is immoral, deceptive or scandalous;

(b)
Matter that may disparage, bring into contempt or disrepute or falsely suggest
a connection with a person, living or dead, an institution, a belief or a
national symbol;

(c)
The flag, coat of arms or other insignia of the United States, a state or
municipality or a foreign nation or a simulation of the flag, coat of arms or
insignia;

(d)
The name or signature of or a portrait that identifies a particular living
individual, unless the individual has given written consent; or

(e)
A mark that so resembles a mark registered in this state, or a mark or trade
name previously used and not abandoned by another person, as to be likely to
cause confusion or mistake or to deceive when used on or in connection with the
applicant’s goods or services.

(2)(a)
A mark may not be registered if the mark is:

(A)
Merely descriptive or deceptively misdescriptive of the applicant’s goods or
services;

(B)
Primarily geographically descriptive or deceptively misdescriptive of the
applicant’s goods or services; or

(C)
Primarily merely a surname.

(b)
The provisions of paragraph (a) of this subsection do not prevent the Secretary
of State from registering a mark used by the applicant that has become
distinctive of the applicant’s goods or services. The Secretary of State may
accept as evidence that the mark has become distinctive, when used on or in
connection with the applicant’s goods or services, proof that the applicant has
used the mark continuously in this state for five years before the date on
which the applicant made the claim that the mark has become distinctive of the
applicant’s goods or services. [1961 c.497 §2; 1965 c.511 §4; 1971 c.318 §3;
1985 c.728 §85; 2005 c.22 §450; 2009 c.459 §8]

647.040 [Amended by
1959 c.261 §1; repealed by 1961 c.497 §16]

647.045
Certificate of registration; contents; evidentiary effect. (1) Upon
compliance by an applicant with the requirements of this chapter, the Secretary
of State shall issue and deliver a certificate of registration to the
applicant. The Secretary of State may issue as the certificate of registration
a copy of the application marked with the word “filed.”

(2)
The certificate of registration must show:

(a)
The registrant’s name and business address. If the registrant is a corporation,
the certificate must show the state of incorporation. If the registrant is a
partnership, the certificate must show the state in which the partnership is
organized and the names of the general partners. If the registrant is a limited
liability company, the certificate must show the state in which the limited
liability company was formed.

(b)
The date the applicant claimed as the first use of the mark anywhere and the
date claimed as the first use of the mark in this state.

(c)
The class and description of the goods or services on or in connection with
which the mark is used.

(d)
A reproduction of the mark.

(e)
The registration date and the term of registration.

(3)
A certificate of registration issued by the Secretary of State under this
chapter, or a copy of the certificate duly certified by the Secretary of State,
is competent and sufficient proof of the registration of the mark in an action
or proceeding brought in a court in this state. [1961 c.497 §4; 1965 c.511 §5;
1971 c.318 §4; 1985 c.728 §86; 2009 c.459 §9]

647.050 [Repealed by
1961 c.497 §16]

647.055
Period of registration; renewal; notice. (1) Registration of a mark under this
chapter is effective for a term of five years from the date of registration and
may be renewed for successive five-year terms. The Secretary of State shall
renew the registration if the registrant:

(a)
Submits an application for renewal, verified as provided in ORS 647.015 (3),
within 180 days before the term of registration expires;

(b)
Includes with the application a statement, verified as provided in ORS 647.015
(3), that the mark has been in use and is still in use; and

(c)
Includes with the application a specimen showing actual use of the mark.

(2)
A registration that is effective on June 23, 2009, shall remain in effect for
the remainder of the term of registration. The registration may be renewed as
provided in subsection (1) of this section.

(3)
The Secretary of State, before the term of registration expires, shall notify
the registrant in writing at the mailing address shown for the registrant in
the current records of the Secretary of State that the registrant must renew
the registration. [1961 c.497 §§5,7; 1965 c.511 §6; 1971 c.318 §5; 1981 c.633 §72;
1985 c.728 §86a; 1989 c.931 §2; 1991 c.132 §21; 2009 c.459 §10]

647.060 [Repealed by
1961 c.497 §16]

647.065
Assignment; filing with Secretary of State; legal and evidentiary effect; public
record of registrations. (1) A mark and the registration for the mark under
this chapter are assignable with the goodwill of the business in which the mark
is used, or with the part of the goodwill of the business that is connected
with the use of and symbolized by the mark.

(2)
To assign the registration, a registrant must sign a written instrument. The
registrant may submit the instrument to the Secretary of State for filing.
After filing the instrument, the Secretary of State may issue to the assignee a
certificate of registration that is effective for the remainder of the term of
registration.

(3)
An assignment of registration under this section is void as against a
subsequent purchaser that purchases the registration for valuable consideration
and without notice of the assignment unless the assignment is submitted to the
Secretary of State of State for filing within 90 days after the assignment or
before the subsequent purchase, whichever is later.

(4)
A registrant or applicant for registration may submit for filing with the
Secretary of State a change of name for the registration or the application.
The Secretary of State may issue a certificate of registration for an assigned
application in the assignee’s name or may issue a certificate of registration
in the assignee’s name for the remainder of the term of registration.

(5)
The Secretary of State, at the Secretary of State’s sole discretion, may
receive for filing other signed written instruments related to a mark that is
registered or an application that is pending, such as licenses, security
interests or mortgages.

(6)
Acknowledgment is prima facie evidence of the execution of an assignment or
other instrument. If the Secretary of State accepts an instrument for filing,
the Secretary of State’s record is prima facie evidence of the execution.

(7)
The Secretary of State may accept for filing a photocopy of an instrument if a
party to the instrument or a successor to the party certifies that the
photocopy is a true and correct copy of the original instrument.

(8)
The Secretary of State shall keep for public examination a record of all marks
registered or renewed under this chapter and all documents submitted for filing
under this section. [1961 c.497 §6; 1965 c.511 §7; 1971 c.318 §6; 1985 c.351 §25;
1985 c.728 §87a; 2005 c.22 §451; 2009 c.459 §11]

647.070 [Repealed by
1961 c.497 §16]

647.075
Cancellation of registrations. (1) The Secretary of State shall cancel
a registration for a mark or part of a registration if:

(a)
The Secretary of State receives a voluntary request from the registrant or the
assignee of record to cancel the registration.

(b)
The registration has not been renewed in accordance with the provisions of ORS
647.055.

(c)
A court of competent jurisdiction either orders cancellation of the
registration or makes any of the following findings:

(A)
The registered mark has been abandoned.

(B)
The registrant is not the owner of the mark.

(C)
The registration was granted improperly.

(D)
The registration was obtained fraudulently.

(E)
The registered mark is the generic name for the goods or services or a portion
of the goods or services for which the mark has been registered.

(F)
The registered mark is likely to cause confusion or mistake or to deceive
because of the registered mark’s similarity to a mark registered with the
United States Patent and Trademark Office and not abandoned before the
application for the registered mark was filed under ORS 647.015.

(2)
If the registrant proves that the registrant has a concurrent registration in
the United States Patent and Trademark Office that covers an area that includes
this state, the Secretary of State may not cancel the registration for the area
covered by the concurrent registration notwithstanding a court’s finding under
subsection (1)(c)(F) of this section. [1961 c.497 §8; 1965 c.511 §8; 1971 c.318
§7; 1981 c.633 §73; 1985 c.728 §88; 2009 c.459 §12]

647.077
Action to cancel mark or compel registration; Secretary of State not a party. An action to
cancel a mark registered under this chapter or an action in mandamus to compel
the Secretary of State to register a mark must be brought in a circuit court in
this state. An action in mandamus must be based solely on the record before the
Secretary of State. In an action to cancel a mark, a person may not name the
Secretary of State as a party but the court shall notify the Secretary of State
and permit the Secretary of State to intervene in the proceeding. [2009 c.459 §18]

647.080 [Repealed by
1961 c.497 §16]

(Remedies)

647.085
Fraudulent registration prohibited; liability; action for damages. (1) A person
may not, on the person’s behalf or on behalf of another person, apply for,
obtain or maintain a filing or registration for a mark under this chapter by
knowingly making a false or fraudulent representation or declaration, orally or
in writing, or by other fraudulent means.

(2)
A person that violates subsection (1) of this section is liable to pay all
damages sustained in consequence of the filing or registration. The party
injured by the filing or registration may bring an action for damages in a
court of competent jurisdiction. [1961 c.497 §10; 1965 c.511 §9; 1971 c.318 §8;
1981 c.633 §73a; 2009 c.459 §13]

647.090 [Repealed by
1961 c.497 §16]

647.095
Prohibited acts; liability. (1) A person may not:

(a)
Use without the registrant’s consent and in connection with a sale,
distribution, offer for sale or advertisement of goods or services a
reproduction, counterfeit, copy or colorable imitation of a mark registered
under this chapter if the use is likely to cause confusion or mistake or to
deceive as to the origin of the goods or services; or

(b)
Apply a mark described in paragraph (a) of this subsection to a label, sign,
print, package, wrapper, receptacle or advertisement intended for use in
connection with the sale or distribution of goods or services within this
state.

(2)
A person that acts as described in subsection (1) of this section is liable for
the remedies provided in ORS 647.105 in a civil action brought by the
registrant, except that the registrant may not recover profits or damages from
the person unless the person acted as described in subsection (1)(b) of this
section with the intent to cause confusion or mistake or to deceive. [1961
c.497 §11; 1965 c.511 §10; 1985 c.566 §1; 2009 c.459 §14]

647.100 [Repealed by
1961 c.497 §16]

647.105
Remedies for infringement. (1) An owner of a mark registered under this
chapter may proceed in a civil action to seek an injunction against the
manufacture, use, display or sale of a counterfeit or imitation of the mark. A
court of competent jurisdiction may:

(a)
Grant injunctions to restrain the manufacture, use, display or sale as the
court deems just and reasonable;

(b)
Require the defendant to pay to the owner all profits the defendant derived and
all damages the owner suffered from the manufacture, use, display or sale; and

(c)
Order counterfeits or imitations in the defendant’s possession or under the
defendant’s control to be delivered to an officer of the court or the owner to
be destroyed.

(2)
If the court finds that the defendant acted in bad faith, with knowledge or otherwise
according to the circumstances of the case, the court in the court’s discretion
may enter a judgment in an amount not to exceed three times the sum of the
defendant’s profits and the owner’s damages and reasonable attorney fees. If
the court finds that the plaintiff acted in bad faith, vexatiously, wantonly or
for oppressive reasons, the court in the court’s discretion may award
reasonable attorney fees to the defendant. [1961 c.497 §12; 1965 c.511 §11;
1985 c.566 §2; 2009 c.459 §15]

647.107
Grounds for injunctive relief; famous marks. (1) Subject to the principles of
equity, the owner of a mark that is famous and distinctive in this state,
inherently or through acquired distinctiveness, is entitled to an injunction
against another person’s commercial use of the mark if:

(a)
The other person’s use began after the mark became famous; and

(b)
The use is likely to cause dilution of the famous mark.

(2)
A mark is famous if the general consuming public of this state or of a
geographic area within this state widely recognizes the mark as a designation
of the source of the mark owner’s goods or services. In determining whether a
mark is famous, a court may consider factors such as:

(a)
The duration, extent and geographic reach of advertising and publicity of the
mark in this state by the owner or by other persons;

(b)
The amount, volume and geographic extent of sales of goods or services offered
under the mark in this state;

(c)
The extent to which the mark is actually recognized in this state; and

(d)
Whether the mark is registered in this state, appears on the principal register
created under the Trademark Act of 1946, 60 Stat. 427, 15 U.S.C. 1051 et seq.,
or is otherwise registered under federal law.

(3)
In an action brought under this section, the owner of a famous mark is entitled
to injunctive relief throughout the geographic area in which the court finds
that the mark became famous before the other person began the other person’s
use of the mark. The court may not order injunctive relief outside this state.

(4)
If the court finds that the other person willfully intended to cause dilution
of the famous mark, the owner is entitled to the remedies provided in this
chapter, subject to the court’s discretion and the principles of equity.

(5)
An owner of a famous mark may not bring an action for another person’s use if
the use is a nominative or descriptive fair use or facilitation of a nominative
or descriptive fair use, other than as a designation of source for the other
person’s own goods or services, including a use:

(a)
In connection with:

(A)
Advertising or promotion that permits consumers to compare goods or services;
or

(B)
Identifying or parodying, criticizing or commenting upon the owner of the
famous mark or the goods or services of the owner of the famous mark;

647.111
Seizure of counterfeit goods in infringement proceeding; liability for wrongful
seizure; undertaking.
(1) In a civil action under ORS 647.105, upon motion by the plaintiff with or
without notice to the defendant, the court may order seizure of the counterfeit
goods from any person manufacturing, displaying for sale or selling the goods
if the plaintiff shows good cause and a probability of success on the merits
and posts an undertaking under subsection (6) of this section.

(2)
If the plaintiff makes a motion without notice to the defendant for an order
for seizure and the court determines from the motion that there is good reason
for proceeding without notice to the defendant, the court may waive the
requirement of notice and order seizure of the counterfeit goods.

(3)
Any person from whom seizure is effected by order of the court under this
section shall be served with the order at the time of the seizure. The order of
seizure shall set forth:

(a)
The date or dates on which the seizure is ordered to take place;

(b)
A description of the counterfeit goods to be seized;

(c)
The identity of the person or description of the authority of the person who
will seize the counterfeit goods;

(d)
A description of the location or locations at which seizure is to occur; and

(e)
A hearing date not more than 10 court days after the last date on which seizure
is ordered at which any person from whom goods are seized may appear and seek
release of the seized goods.

(4)
If the plaintiff causes seizure of goods that are not counterfeit, the
plaintiff shall be liable for the following damages, costs and expenses:

(a)
Any damages proximately caused by the seizure of goods that are not counterfeit
to any person having a financial interest in the seized goods.

(b)
Costs incurred by any person in defending against seizure of noncounterfeit
goods.

(c)
Expenses, including reasonable attorney defending against the seizure of any
noncounterfeit or noninfringing goods, upon a showing that the plaintiff acted
in bad faith in causing the seizure to occur.

(d)
Punitive damages, if warranted.

(5)
A person seeking a recovery under subsection (4) of this section may join any
surety on an undertaking posted under subsection (6) of this section. Any
judgment of liability shall bind the person liable under subsection (4) of this
section and the surety jointly and severally, but the liability of the surety
shall be limited to the amount of the undertaking.

(6)
The court shall set the amount of the undertaking required by subsection (1) of
this section in accordance with the recovery of damages, costs and expenses
under subsection (4) of this section that would be likely if the court
ultimately were to determine that the goods seized were not counterfeit.

(7)
Any person entitled to recover under subsection (4) of this section, within 30
days after the date of seizure, may object to the undertaking on the ground
that the surety or the amount of undertaking is insufficient.

(8)
The motion filed pursuant to subsection (1) of this section shall include a
statement:

(a)
Advising the person from whom the goods are seized that the undertaking has
been filed;

(b)
Informing the person of the right to object to the undertaking on the ground
that the surety or the amount of the undertaking is insufficient; and

(c)
Advising the person from whom the goods are seized that the objection to the
undertaking must be made within 30 days after the date of seizure. [1985 c.566 §4]

647.115
Effect of chapter on marks or trade names acquired at common law; effect of
civil remedies on criminal statutes; intent and construction of chapter. (1) The
provisions of this chapter do not adversely affect the rights or the
enforcement of rights in marks or trade names acquired in good faith at any
time at common law.

(2)
The enumeration of a right or remedy in this chapter does not affect the right
of a registrant to prosecute under a penal law of this state.

(3)
The intent of this chapter is to provide for a system of trademark registration
and protection substantially consistent with the system of trademark
registration and protection set forth in 15 U.S.C. 1051 et seq. Construction
given the provisions set forth in 15 U.S.C. 1051 et seq. constitutes persuasive
authority for interpreting and construing this chapter. [1961 c.497 §14; 1965
c.511 §12; 1985 c.566 §5; 1985 c.728 §89; 2009 c.459 §19]

647.120 [Repealed by
1961 c.497 §16]

647.125 [1985 c.566 §6;
repealed by 1999 c.722 §9]

647.130 [Repealed by
1961 c.497 §16]

647.135
Trademark counterfeiting. (1) A person commits trademark counterfeiting if
the person knowingly and with the intent to sell or distribute and without the
consent of the registrant uses, displays, advertises, distributes, offers for
sale, sells or possesses any item that bears a counterfeit of a mark or any
service that is identified by a counterfeit of a mark registered under this
chapter or registered under this chapter or registered under 15 U.S.C. 1052
with knowledge that the mark is counterfeit.

(2)
For purposes of this section, a mark is counterfeit if:

(a)
It is a mark that is identical to or substantially indistinguishable from a
registered mark; and

(b)
It is used on or in connection with the same type of goods or services for
which the genuine mark is registered.

(3)
A person does not commit trademark counterfeiting if the person has adopted and
lawfully used the same or a confusingly similar mark in the rendition of like
services or the manufacture of like goods in this state from a date before the
effective date of registration of the service mark or trademark and continues
to use the mark after the effective date of registration. [1999 c.722 §2]

647.140
Trademark counterfeiting in third degree; penalty. (1) A person
commits the crime of trademark counterfeiting in the third degree if the person
commits trademark counterfeiting as described in ORS 647.135 and:

(a)
The total number of items bearing the counterfeit mark is not more than 100; or

(b)
The total retail value of all of the items bearing the counterfeit mark or
services that are identified by the counterfeit mark is not more than $1,000.

(2)
Trademark counterfeiting in the third degree is a Class A misdemeanor.
Notwithstanding ORS 161.655, if the person convicted under this section is a
corporation, the maximum fine that may be imposed is $100,000. [1999 c.722 §3]

647.145
Trademark counterfeiting in second degree; penalty. (1) A person
commits the crime of trademark counterfeiting in the second degree if the
person:

(a)
Commits trademark counterfeiting as described in ORS 647.135 and:

(A)
Has one prior conviction for trademark counterfeiting in any degree;

(B)
The total number of items bearing the counterfeit mark is more than 100 but
less than 1,000; or

(C)
The total retail value of all of the items bearing the counterfeit mark or
services that are identified by the counterfeit mark is more than $1,000 but
less than $10,000.

(b)
Knowingly manufactures or produces with intent to sell or distribute any item
that bears a counterfeit mark or any service that is identified by a
counterfeit mark.

(2)
Trademark counterfeiting in the second degree is a Class C felony. However,
notwithstanding ORS 161.655, if the person is convicted under:

(a)
Subsection (1)(a)(A) of this section and is a corporation, the maximum fine
that may be imposed is $200,000.

(b)
Subsection (1)(b) of this section and the person has one prior conviction for
trademark counterfeiting in any degree and is a corporation, the maximum fine
that may be imposed is $200,000. [1999 c.722 §4]

647.150
Trademark counterfeiting in first degree; penalty. (1) A person commits
the crime of trademark counterfeiting in the first degree if the person commits
trademark counterfeiting as described in ORS 647.135 or 647.145 (1)(b) and:

(a)
Has two or more prior convictions for trademark counterfeiting in any degree;

(b)
The total number of items bearing the counterfeit mark is 1,000 or more; or

(c)
The total retail value of all of the items bearing the counterfeit mark or
services that are identified by the counterfeit mark is $10,000 or more.

(2)
Trademark counterfeiting in the first degree is a Class B felony. [1999 c.722 §5]

647.155
Seizure, forfeiture and disposal. (1) The following are subject to
seizure and forfeiture in the same manner as the proceeds of prohibited conduct
under ORS chapter 131A:

(a)
All raw materials and equipment that are used, or intended for use, in
providing, manufacturing and delivering items bearing a counterfeit mark or
services identified by a counterfeit mark;

(b)
All conveyances that are used, or intended for use, to transport items bearing
a counterfeit mark;

(c)
All books, records, computers and data that are used or intended for use in the
production, manufacture, sale or delivery of items bearing a counterfeit mark
or services identified by a counterfeit mark; and

(d)
All moneys, negotiable instruments, balances in deposit or other accounts,
securities or other things of value furnished or intended to be furnished by
any person in the course of activity constituting a violation of ORS 647.140,
647.145 or 647.150.

(2)
Items bearing a counterfeit mark are subject to seizure and disposition as
provided in ORS 133.525 to 133.703. However, if the registrant so requests, the
agency holding the seized items shall release the seized items to the
registrant or make such other disposition as the registrant directs. If the
registrant does not direct disposition of the seized items, the agency shall
destroy the items. [1999 c.722 §6; 2001 c.780 §§17,17a; 2009 c.78 §60]

ROYALTIES
FOR NONDRAMATIC MUSICAL WORKS

647.700
Definitions for ORS 647.700 to 647.730. As used in ORS 647.700 to 647.730,
unless the context requires otherwise:

(1)
“Copyright owner” means the owner of a copyright of a nondramatic musical or
similar work recognized and enforceable under the copyright laws of the United
States pursuant to title 17 of the United States Code (P.L. 94-553, 17 U.S.C.
101 et seq.).

(2)
“Nondramatic” means the public performance of a recorded, broadcast or live
musical work. “Nondramatic” does not include the performance of a dramatic
work, including a play.

(3)
“Performing rights society” means an association or corporation that licenses
the public performances of nondramatic musical works on behalf of copyright
owners, including but not limited to:

(a)
The American Society of Composers, Authors and Publishers (ASCAP);

(b)
Broadcast Music, Inc. (BMI); and

(c)
The Society of European Stage Authors and Composers (SESAC).

(4)
“Proprietor” means the owner of a retail establishment, restaurant, inn, bar,
tavern, sports or entertainment facility or any other similar place of business
or professional office located in this state in which the public may assemble
and in which nondramatic musical works or similar copyrighted works may be
performed, broadcast or otherwise transmitted for the enjoyment of members of
the public there assembled.

(5)
“Royalty” or “royalties” means the fees payable to a copyright owner or
performing rights society for the public performance of nondramatic musical
works or other similar works. [1997 c.236 §1]

Note: 647.700 to
647.730 were enacted into law by the Legislative Assembly but were not added to
or made a part of ORS chapter 647 or any series therein by legislative action.
See Preface to Oregon Revised Statutes for further explanation.

647.705
Requirements for performing rights societies. A performing rights society
shall not enter into, or offer to enter into, a contract for the payment of
royalties by a proprietor unless the performing rights society agrees to
provide to the proprietor upon request at the proprietor’s place of business,
by electronic means or otherwise:

(1)
Information as to whether specific copyrighted musical works are in the
repertoire of the performing rights society;

(2)
The opportunity to review the most current available list of the performing
rights society’s members or affiliates; and

(3)
The schedule of rates and terms of the royalties to be collected under the
contract, including any sliding scale or schedule for any increase or decrease
of the rates for the duration of the contract. [1997 c.236 §2]

Note: See note under
647.700.

647.710
Requirements for contracts for payment of royalties. Every contract
for the payment of royalties between a proprietor and a performing rights
society executed, issued or renewed in this state shall be:

(1)
In writing;

(2)
Signed by the parties; and

(3)
Written to include, at a minimum, the following information:

(a)
The proprietor’s name and business address and the name and location of each
place of business to which the contract applies;

(b)
The name of the performing rights society;

(c)
The duration of the contract; and

(d)
The schedule of rates and terms of the royalties to be collected under the
contract, including any sliding scale or schedule for any increase or decrease
of the rates for the duration of the contract. [1997 c.236 §3]

(a)
Enter onto the premises of a proprietor’s business for the purpose of
discussing or inquiring about a contract for the payment of royalties with the
proprietor or the proprietor’s employees, without first providing
identification to the proprietor or the proprietor’s employees and making known
to them the purpose of the discussion or inquiry;

(b)
Engage in any coercive conduct, act or practice that is substantially
disruptive to a proprietor’s business;

(c)
Use or attempt to use any unfair or deceptive act or practice in negotiating
with a proprietor; or

(d)
Fail to comply with or fulfill the obligations imposed by ORS 647.705 and
647.710.

(2)
Nothing in ORS 647.700 to 647.730 shall be construed to prohibit a performing
rights society from conducting investigations to determine the existence of
music use by a proprietor or informing a proprietor of the proprietor’s
obligation under the copyright laws of the United States pursuant to title 17
of the United States Code (P.L. 94-553, 17 U.S.C. 101 et seq.). [1997 c.236 §4]

Note: See note under
647.700.

647.720
Action for damages; injunction. In the event of a violation of ORS
647.705, 647.710 or 647.715, any person may bring an action to recover actual
damages and reasonable attorney fees or seek an injunction or any other remedy
available at law or in equity. [1997 c.236 §5]

Note: See note under
647.700.

647.725
Relationship to other laws. The rights, remedies and prohibitions contained in
ORS 647.700 to 647.730 shall be in addition to and cumulative to any other
right, remedy or prohibition accorded by common law, federal law or the
statutes of this state, and nothing contained in ORS 647.700 to 647.730 shall
be construed to deny, abrogate or impair any common law or statutory right,
remedy or prohibition. [1997 c.236 §6]

Note: See note under
647.700.

647.730
Applicability of ORS 647.700 to 647.730. ORS 647.700 to 647.730 do not apply to
contracts between copyright owners or performing rights societies and
broadcasters licensed by the Federal Communications Commission or to contracts
with cable television operators, cable television programmers or other similar
transmission services. ORS 647.700 to 647.730 do not apply to musical works
performed in synchronization with an audiovisual film or tape. [1997 c.236 §7]